Appeal No. 2006-0650 Page 13
Application No. 10/007,613
The problem with this construction is that claims 39, 71, and 80, by Appellant’s
own admission, would place the system at two different temperatures at the same time.
Response filed 4/16/2004, Page 21. We don’t understand how this configuration could
exist. It is like claiming a milk product which is simultaneously both frozen solid and in
the form of warm milk. One way out of this conflict would be to construe the claims to
contain two separate articles, each “characterized by” (i.e., having the property of) one
of the two different temperatures recited in the claims. Although the claims refer to “one
or more articles,” the antecedent basis in the “wherein clause” does not clearly express
this two-article requirement. The examiner’s position that the “wherein clause” is a
functional limitation of the system may resolve the apparent conflict, but surely flies in
the face of the plain language (“characterized by”) of the claims.
The purpose of § 112, second paragraph, is to ensure that the claim scope is
clear. The “wherein clause” in describing the system to be characterized by two
different temperature ranges does not clearly define the scope of the claim. It is not
evident how the system can be simultaneously be at a “first elevated temperature” and
a “second elevated temperature” where enzyme is present. To the contrary, the
specification indicates that the first and second temperatures are experienced by the
system at different times. Since claims 39-51, 53-55, 63, 71, 73, 74, and 80 are “not
amenable to construction” and are “insolubly ambiguous,” we find these claims to be
indefinite under § 112, second paragraph. Datamize, LLC v. Plumtree Software, Inc.,
417 F.3d 1342, 1347, 75 USPQ2d 1801, 1804 (Fed. Cir. 2005).
Claims 39-51, 53-56, 63, 71, 73, 74, 80, and 82 are further rejected under § 112,
second paragraph, as being indefinite in the recitation of the “means for” limitations.
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